DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
2. The information disclosure statement (IDS) submitted on 4/24/2023, 5/22/2023, 7/11/2024, 5/2/2025 and 5/16/2025 were filed timely. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
3. Applicant’s election without traverse of Group 1, claims 1-12 in the reply filed on 12/1/2025 is acknowledged. Claims 13-14 are withdrawn.
Claim Rejections - 35 USC § 102
4. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
5. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
6. Claims 1-8 and 11 are rejected under 35 U.S.C. 102(a)(1) and rejected under 35 U.S.C. 102(a)(2) as being anticipated by (US 2020/0392339 A1) to Uta et al. (hereinafter Uta).
Uta is directed toward a mixed composition of silicon based compounds. Uta discloses at paragraph [0016] of an organopolysiloxane of Formula (1) that reads on Applicants formula (b1) shown below:
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163
416
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Uta further discloses at paragraph [0016] of an organopolysiloxane of Formula (2) that reads on Applicants formula (a1) shown below:
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509
718
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Uta discloses at paragraph [0066] of an organic solvent of acetone, which Applicants specification at paragraph [0108] described as the preferred solvent (E) with acetone having a [Hansen solubility parameter=19.9 (J/cm.sup.3).sup.1/2, δH=7.0 (J/cm.sup.3).sup.1/2]. Uta discloses at paragraph [0048] of an formula (3) (shown below), which reads on Applicants (c1):
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176
435
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Uta discloses at paragraph [0016] of 100 parts for formula 1. Uta discloses at paragraph [0017] of 0.1 to 50 parts of an organosilicon having at least three hydrozable groups other than compound A, which reads on the ratio of claim 2. Uta discloses at paragraph [0060] that the composition is moisture cure, which would therefore have less than water being 20% mass. Uta discloses at paragraph [0013] of an acetic acid, which reads on Applicants weak acid (G). Uta discloses each and every element of claims 1-8 and 11.
Allowable Subject Matter
7. Claims 9 and 10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
8. The following is a statement of reasons for the indication of allowable subject matter: The prior art does not teach a composition comprising Applicants formula (a1-1).
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY D WASHVILLE whose telephone number is (571)270-3262. The examiner can normally be reached M-F 9-5.
10. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
11. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
12. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JEFFREY D WASHVILLE/Primary Examiner, Art Unit 1766
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